Atlanta-Patent-Attorney.com

What are some of proposals of the Patent Reform Act of 2007? (Continued)

Terry Williamson — Sun, 07 Sep 2008 18:19:59 +0000

Another major proposal of the Patent Reform Act of 2007 relates to controversial recently issued patents. Since the number of patent applications per year has sharply risen, so too has the number of challenges against issued patents, which are mostly being settled in court. The Patent Reform Act hopes to remedy this often long and costly process by establishing post-grant review proceedings, whereby any opposition over a recently issued patent can be brought before the United States Patent and Trademark Office, potentially bypassing the involvement of courts. Any patent issued after the passing of the Patent Reform Act would be eligible for review under these new proceedings, as long as a challenge is officially filed within 12 months from the patent grant date or, under a different set of circumstances, if a challenger can provide “substantial reason” that the continuing existence of a patent “causes or is likely to cause” the challenging party “significant economic harm.” The Patent Reform Act would also create a new Patent Trial and Appeal Board to oversee and rule on each post-grant review proceeding.

Annual AIPLA Meeting October 23-25, 2008

Terry Williamson — Mon, 01 Sep 2008 15:02:42 +0000

The annual meeting of the American Intellectual Property Law Association (AIPLA) will be held on October 23-25, 2008 at the Marriott Wardman Park Hotel in Washington, D.C.. Along with the usual discussion of intellectual property related matters, there will potentially be a discussion centered on National Stage applications. The IP Practice in Latin America committee is trying to team with both the IP Practice in Europe committee and IP Practice in Japan committee to fuel a joint session discussion. The main focus will be on patent applications that will eventually lead to a National Stage application in Latin America countries, fertile ground for patent attorneys working in Atlanta. Topics will include how to best draft these types of applications to minimize further work or problems during the transition to potentially file a National Stage application in another country. For further information on the annual meeting please visit http://www.aipla.org/Content/ContentGroups/Meetings_and_Events1/Annual_Meetings/200814/Ann08FlyerNotDark.pdf to view the official AIPLA flyer.

What are some of proposals of the Patent Reform Act of 2007?

Terry Williamson — Sun, 31 Aug 2008 18:19:32 +0000

One of the most noticeable proposals to be enacted by the Patent Reform Act of 2007 is a sweeping change of the patent application process switching it from a “first to invent” system into a “first to file” system. Currently, the United States is the only country working under the “first to invent” system, meaning when similar patent applications are filed, priority will be given to the one claiming the earliest invention date and not determined by the date of the actual application filing. This has led to complications in the U.S. application process, most notably, requiring the United States Patent and Trademark Office to hold lengthy interference hearings to correctly identify the date at which similar patents were invented in order to give proper priority. With the switch to a “first to file” system, priority for applications of similar patents will be wholly determined by the date at which the application was filed instead of the date the patent was claimed to be invented on.

What is the Patent Reform Act of 2007?

Terry Williamson — Sun, 24 Aug 2008 18:13:48 +0000

The Patent Reform Act was introduced to the 110^th United States Congress in April of the year 2007 with the goal of making American patent law more similar to worldwide patent laws. The Patent Reform Act of 2007 is loosely based on the previous Patent Reform Act of 2005 that was left not voted on by the 109^th U.S. Congress. Many of the proposals written in the Act are direct results of reports filed by both the Federal Trade Commission and the National Academy of Sciences after studies of U.S. patent law were completed in 2003 and 2004 respectively. The House of Representatives passed their version of the bill (H.R. 1908) on September 7, 2007, however the Senate version is still under consideration. Most recently, the Senate Committee on the Judiciary ordered a report on the bill, which was then issued on January 24, 2008 under the title S. Rpt. 110-259.

Inventors Association of Georgia, August 23, 2008 Atlanta Meeting

Terry Williamson — Mon, 18 Aug 2008 14:12:06 +0000

On Saturday, August 23, 2008, the Inventors Association of Georgia will be holding its next regular Atlanta membership meeting. The event starts when doors open at 8:30 a.m. with the 8:30 to 10:00 a.m. time slot reserved solely for networking. During this time a buffet breakfast will be made available for a cost, while cold drinks and coffee are available for free. The actual meeting itself begins promptly at 10:00 a.m. with a scheduled presentation. This Atlanta membership meeting will take place in its usual Ryan’s Restaurant location, located at 7045 Jimmy Carter Blvd in Norcross, Georgia. For more information on this meeting or to learn how to become a member of the Inventors Association of Georgia please visit georgiainventors.com.

USPTO warns patent practitioners on outsourcing

Terry Williamson — Mon, 28 Jul 2008 14:15:15 +0000

The Federal Register, dated July 23, 2008 reminds patent practitioners that they cannot send technology abroad without proper licenses. As noted in a previous entry, many firms have been sending patent searches and patent application preparation work overseas, which the USPTO points out is improper without the appropriate licenses from the Bureau of Industry and Security at the Department of Commerce. Since any technology related to a U.S. patent application cannot be sent overseas, this would appear to include having searches performed overseas.

The notice further points out that the foreign filing license issued by the USPTO only covers sending technology abroad for the purpose of filing applications in foreign countries. Since the search and patent application preparation comes before the foreign filing license issuance, this would seem to be a moot point.

Inventor’s Association of Georgia meeting in Atlanta July 26, 2008

Terry Williamson — Sat, 05 Jul 2008 21:40:29 +0000

The Inventor’s Association of Georgia will be having its Atlanta meeting on Saturday, July 26th, 2008 at Ryan’s Restaurant (7045 Jimmy Carter Boulevard, Norcross, Georgia. There will be time for networking from 8:30AM to 10:00AM when the meeting will start. Food will be available for purchase throughout the meeting (breakfast, then lunch). Members may attend free of charge, non-members pay a $10 entry fee. Non-members can join after the meeting for an additional $25. For more information about this meeting or about the Inventor’s Association of Georgia, please visit georgiainventors.com.

Is Foreign Legal Outsourcing Ethical?

Terry Williamson — Sun, 01 Jun 2008 18:37:27 +0000

For the most part, I think not!

Many law firms are starting to outsource work to companies and/or law firms in foreign countries. In the patent field, both patent prior-art searches and patent application preparation for filing in the United States are being outsourced.

However, this does not protect the client, and in my opinion is usually a violation of attorney-client privilege.

While it is common to file patent applications in foreign countries, and the work must be performed by practitioners knowledgeable and permitted to act under the foreign jurisdiction’s laws, such would typically not be a violation of attorney-client privilege because the work being done is for use in the foreign country under its laws by practitioners bound by their countries rules and regulations.

Unfortunately, when the work being outsourced is for use in the United States, those performing the outsourced work are not legally bound by the confidentiality laws and rules of the U.S. Further, there is no means of enforcement, since the outsource workers are located in another country and the laws may not provide the enforcement of secrecy and privilege that U.S. laws and rules do. Attempts by foreign service providers to establish U.S. divisions is only beneficial if all matters are retained in the U.S. The moment the foreign division sends client confidential information back to the home country, attorney-client privilege has potentially been compromised.

In fact, the law firm of Newman McIntosh & Hennessey has recently requested opinions from Maryland and Washington, DC bars whether legal outsourcing violates the Constitution and bar ethical rules. See the BLT: the Blog of LegalTimes “Law Firm Files Suit to Bar Outsourcing of Client Data”.

Other than for filing of legal documents in foreign jurisdictions, when might outsourcing not violate attorney-client privilege?

Since the client is the only one with the right to waive the privilege, it would appear that obtaining client consent for outsourcing should overcome the possibility of an ethical violation. However, consent must be obtained, and must be informed consent, such that all possibilities for disclosure must be identified before the client can waive the privilege.

Licensing Executive Society meeting in Orlando, Florida

Terry Williamson — Thu, 29 May 2008 16:01:53 +0000

There is an excellent opportunity for Atlanta intellectual property law practitioners to network with executives of companies that license patents, trademarks and copyrights. On October 19 – 22, 2008, the Licensing Executives Society will hold its annual meeting. The Licensing Executives Society was established in 1965 as a professional society. To this day, it has grown to include over 6,000 members in the U.S.A and Canada. The society is targeted towards individuals engaged in the transfer, use, development, manufacture, and marketing of intellectual property. The 2008 annual meeting will be held at the Gaylord Palms Resort and Convention Center in Orlando, Florida. Highlights of this meeting include keynote speeches such as: Brand Management and Licensing given by the Executive Vice President Corporate Strategy for Disney and Global Licensing given by International Titans. Various other presentations, seminars, and workshops will also be made available.

Atlanta Bar Association will award Logan E. Bleckley Award for Judicial Excellence

Terry Williamson — Thu, 29 May 2008 13:57:46 +0000

On Thursday, May 29, 2008, the Litigation Section of the Atlanta Bar Association will hold a bench and bar reception to honor the 2008 recipient of the Logan E. Bleckley Award for Judicial Excellence, The Honorable Frank M. Hull, Eleventh Circuit Court of Appeals. Included with the $35 cost per person is a buffet and open bar, along with complimentary validated parking. The event will take place 6 PM to 9 PM with the award presentation occurring at 6:45 PM. The gathering will be held at Nelson Mullins Riley & Scarborough, LLP, located at 201 17th Street, NW, Suite 1700, Atlanta. For further information please email windham@atlantabar.org, call 404-521-0781, or visit the Atlanta Bar Association website at http://www.atlantabar.org.